Domain Name Disputes in India

Dec 2022
Domain Name As Trademarks

A domain name which is unique, capable of identifying itself and distinguishing its goods and services from those of others and acts as a reliable source identifier of concerned goods and services on the internet may be registered as a trademark.

Domain Name Disputes

A domain name dispute would arise when a domain name comparable to a registered trademark is registered by an individual or association who is not the trademark holder. All domain name registrars must follow the ICANN’s Uniform Domain-Name Dispute-Resolution Policy (UDRP).

Protection Of Domain Name In India

In India, domain names may be granted protection as a trademark under the provisions of Trademarks Act, 1999, provided that the domain name fulfils all requirements to be properly registered under the Act.

An appellant in a proceeding must establish the following three elements to succeed:
  • The domain name is indistinguishable or confusingly similar to a trademark or service mark in which the appellant has rights;
  • The registrant does not have rights or legitimate interests in the domain name;
  • The domain name has been registered and is being used in “bad faith”.
Legal Remedies

Once registered, the registered proprietor of a domain name will have all those legitimate rights and authorities which are commonly availed by the owners of registered trademarks or services marks in India. This also includes the right to sue for infringement or passing off. If the challenge were successful, the domain name will be suspended or all the rights over it would be transferred to the legitimate owner. The owner of the trademark can file a suit at the civil court in order to obtain injunction or compensation.

  • In Bigtree Entertainment v Brain Seed Sportainment 2018, the Delhi high court recently denied the plaintiffs, and owners of the website bookmyshow.com, an interim injunction against the defendant’s use of the domain name bookmysports.com. The court considering that prefix BOOKMY of the Plaintiff’s trademark BOOKMYSHOW was descriptive, not an arbitrary coupling of words and the plaintiff’s failure to prove that “BOOKMY” has acquired distinctiveness or secondary meaning, dismissed the application for interim injunction filed by the plaintiffs.
  • In Titan Indistries Limited V. Prashanth Koorapati And Ors.(1998), the defendant had registered ‘tanishq.com’ as its domain name which was based on the plaintiffs trademarks TANISHQ. The plaintiff objected the use of its Trade Marks as domain name by the defendant. The court issued an ex parte ad-interim injunction restraining defendant from registering a name or operating any business or including the word TANISHQ as a domain name on the internet; that could lead to passing off the business and goods of defendant as those of plaintiff.
Trending Blogs
The Common Law Protection Of Trade Secrets And The Need For A Statue
Introduction: A trade secret is anything you use in your business that gives you an advantage over your competitors. A trade secret can be a recipe, process, formula, strategy, technique or device that your competitors do not know, do not have, and cannot use. With development in technology, as well as the ease of sharing, […]
Read More
Early-Stage Intellectual Property to Raise More Money
What is Artificial Intelligence? Creation of innovative ideas is what matters the most in running a business. People were least bothered to patent the designs. But with increasing use of almost similar ideas in the businesses, it is of great importance to patent the ideas. This shall help in better growth of the business and […]
Read More
Color Trademarks in the Pharmaceutical Industry
The trademarks are vital part of company goods or service and with help of trademark; the consumers are able to identify the business better. Before deciding the correct trademark option for pharmaceutical industry, it is necessary to check for its existence. If any similar one is already present in the trademark database, it is better […]
Read More
Copyrights of Music in India
Music is an art more specifically an intangible form of art. Copyrighting a song or a melody protects the basic right of the creator. The copyright also assist the creator financially. In order to ask for copyright the creator needs to file a registration. Once the creator gains the copyright, any infringement to the copyrighted […]
Read More
Intellectual Property and its Role in the Pharmaceutical Industry
Intellectual property rights are considered to be an important asset of any corporate unit. It is an indication of the creation of mind and the work that makes one entity different from the other. With better IP or intellectual rights, it would be easy to promote the possible innovations and this would be useful in […]
Read More
Alibaba IPR Report Shows Ideal Brand Protection Program
As per sources, e-commerce giant, Alibaba group has successfully gained success using intellectual property rights-protection. The giant has been able to offer quality service due to well integration of the latest technological improvements coupled with partnerships with top-rated brands. Also, external stakeholders assisted the giant in offering quality service to proactively monitor, go through rights-holders […]
Read More
India dropped to 40th position in International Intellectual Property Index
India has fallen to 40th position in the International Intellectual Property Index. This index helps know about the IP climate in the 53 global economies of the present year. This is as per the report US Chamber of Commerce’s Global Innovation Policy Center. As per last year’s report, India has been ranked in the 36th […]
Read More
Lack of Music Publishing Knowledge Robbing Indian Artists of their Rights
In India there has been a lack of knowledge regarding publishing music. It can be said that a large part of publishing an art for is still unexplored. It is not about the common people but the artists and the music companies are oblivious towards it. At the initial stage due to lack of knowledge […]
Read More
Why Intellectual Property Rights
Intellectual property rights create a situation in which the inventor or the creator enjoys full ownership and rights to commercial exploitation of his creation while everyone else is excluded. The justification is that such a creation, if it has material value, must benefit the creator while preventing others who would otherwise commercially exploit the concept […]
Read More
Trademarking surnames
Having difficult surnames may be challenging to explain others and also when you want to register the name as trademark. As per the trademark and merchandise act of 1958, it is stated that a mark can be refused if one choose a personal name or surname. Though, there is no such clear specification in the […]
Read More
X
Download Firm Profile